Gary L. Reinert

Patent Trials and Appeals Board

Aug 15, 2019

15242723 - (D) (P.T.A.B. Aug. 15, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
15/242,723 08/22/2016 Gary L. Reinert SafeFound-1403D 8858
36787 7590 08/15/2019
BLYNN L. SHIDELER
THE BLK LAW GROUP
3500 BROKKTREE ROAD
SUITE 200
WEXFORD, PA 15090
EXAMINER
FERENCE, JAMES M
ART UNIT PAPER NUMBER
3635
NOTIFICATION DATE DELIVERY MODE
08/15/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
blynn@BLKLawGroup.com
cbelleci@BLKLawGroup.com
patents@BLKLawGroup.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte GARY L. REINERT
____________

Appeal 2019-001041
Application 15/242,723
Technology Center 3600
____________

Before MICHAEL L. HOELTER, WILLIAM A. CAPP and
JEREMY M. PLENZLER, Administrative Patent Judges.

CAPP, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134(a) of the final
rejection of claims 1–10 and 19–25. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
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THE INVENTION
Appellant’s invention relates to foundation anchors for ground
supported structures. Spec. ¶ 6. Claim 1, reproduced below, is illustrative
of the subject matter on appeal.
1. A one-piece metal plate foundation comprising:
a main plate body extending a longitudinal length of the
foundation from a top to a bottom of the foundation;
a single rear flange extending at an angle from the main
plate body in a first direction at a rear edge of the main plate
body, wherein the single rear flange does not extend past the
main plate body in a direction opposite the first direction,
wherein the single rear flange extends from a top of the
foundation and includes a rectangular portion at the top of the
foundation;
a single front flange extending at an angle from the main
plate body in the direction opposite the first direction at a front
edge of the main plate body, wherein the single front flange
does not extend past the main plate body in the first direction,
wherein the single front flange extends from a top of the
foundation and includes a rectangular portion at the top of the
foundation; and
wherein top edge surface of the main plate body the rear
flange and the front flange are co-planar and combine to form a
continuous bearing surface across the entire top of the
foundation.
THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
grounds of rejection listed below:
Hughes
Johnson
Stuart
US 4,730,423
US 5,689,918
US 2004/0206020 Al
Mar. 15, 1988
Nov. 25, 1997
Oct. 21, 2004

1. Claims 1–10 and 19–25 are rejected under 35 U.S.C. § 112(b) as
indefinite.
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2. Claims 1 and 2 are rejected under 35 U.S.C. § 102(b) as anticipated
by Stuart.
3. Claims 3 and 4 are rejected under 35 U.S.C. § 103 as being
unpatentable over Stuart.
4. Claims 5 and 6 are rejected under 35 U.S.C. § 103 as being
unpatentable over Stuart and Hughes.
5. Claims 7–10 and 23 are rejected under 35 U.S.C. § 103 as being
unpatentable over Stuart, Hughes, and Johnson.
5. Claims 19–22, 24, and 25 are rejected under 35 U.S.C. § 103 as
being unpatentable over Stuart and Johnson.
OPINION
Indefiniteness
The Examiner considers a plethora of various terms of claim 1 to be
recited in a manner that renders the claim indefinite, including:
A. a top of the foundation (in line 7) when considered in
conjunction with a top of the foundation (in line 12);
B. rectangular portion(s);
C. the entire top of the foundation; and
D. “top edge surface” (preceded by neither a definite article
nor an indefinite article - line 14).
Final Action 3–4. Independent claims 19 and 21 are rejected based on the
use of one or more of the foregoing terms. Id. The remainder of the
pending claims are rejected based on their dependency from a rejected base
claim. Id.
The PTO can properly reject a claim as indefinite if the claim is
ambiguous, vague, incoherent, opaque, or otherwise unclear. In re Packard,
751 F.3d 1307, 1311 (Fed. Cir. 2014). The test for definiteness under 35
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U.S.C. § 112, is whether “those skilled in the art would understand what is
claimed when the claim is read in light of the specification.” Orthokinetics,
Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986)
(citations omitted). In the case of Ex parte McAward, Case No. 2015-
0064116, 2017 WL 3669566 (PTAB Aug. 25, 2017), we pointed out that an
examiner’s indefiniteness rejection begins what is intended to be an
interactive process in which the applicant has the opportunity to respond to
the examiner by amending the claims or by providing evidence or
explanation that shows why the claims are not indefinite. Id. at *2, citing
Packard, 751 F.3d at 1311–12.
We review the Examiner’s rejections in view of the foregoing
principles.
A top of the foundation
Claim 1 recites: (1) a front flange; and (2) a rear flange. Claims App.
The front flange extends from “a” top of the foundation and includes a
rectangular portion at “the” top of the foundation. Id. Similarly, the rear
flange extends from “a” top of the foundation and includes a rectangular
portion at “the” top of the foundation. Id. The Examiner’s rejection raises
the question of whether Appellant’s recital of two “top(s) of the foundation”
indicates that the foundation has more than one top. Final Action 3. “The
claim remains unclear as to how one of ordinary skill in the art would
distinguish between the first and second recitations of ‘a top of the
foundation’. Are they referring to the same component or not?” Ans. 13.
Appellant argues that the claim language defines “the structure as
shown in figure 12.” Appeal Br. 11. “There seems little doubt that one of
ordinary skill in the art reading the claims in light of the specification would
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understand the metes and bounds of the references to a top of the
foundation.” Id. at 12–13. Appellant argues that anyone reading the claims
would understand that the claimed foundation has a single top. Reply Br. 3.
An analysis of claim indefiniteness under § 112 ¶ 2 is “inextricably
intertwined with claim construction.” Energizer Holdings, Inc. v.
International Trade Comm’n, 435 F.3d 1366, 1368 (Fed. Cir. 2006). Here,
the dispute between the Examiner and Appellant is largely a matter of claim
construction. During examination of a patent application, pending claims
are given their broadest reasonable construction consistent with the
specification. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed.
Cir. 2004). Construing claims broadly during prosecution is not unfair to the
applicant, because the applicant has the opportunity to amend the claims to
obtain more precise claim coverage. Id. Under the broadest reasonable
interpretation standard, claim terms are given their ordinary and customary
meaning as would be understood by one of ordinary skill in the art in the
context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249,
1257 (Fed. Cir. 2007).
We begin our analysis by noting that use of the indefinite article “a” is
ordinarily construed as “one or more.” Tate Access Floors, Inc. v. Interface
Architectural Res., Inc., 279 F.3d 1357, 1370 (Fed. Cir. 2002). This at least
opens the possibility, consistent with the Examiner’s rejection, that the
foundation may have more than one “top” and that the top of the foundation
relative to the front flange is different from the top of the foundation relative
to the rear flange. See Renishaw PLC v. Marposs Societa’ per Azioni, 158
F.3d 1243, 1250 (Fed. Cir. 1998) (explaining that if an apparatus claim
recites a general structure without limiting that structure to a specific subset
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of structures, the claim covers all known types of that structure that the
patent disclosure supports).
Appellant’s argument that we should look to Figure 12 to determine
that the invention has but a single top is not persuasive. Reply Br. 3.
Appellant cannot narrow a claim term’s ordinary meaning simply by
pointing to the preferred embodiment disclosed in the specification. CCS
Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002).
This follows from the prospect that an applicant need not “describe in the
specification every conceivable and possible future embodiment of his
invention.” Rexnord Corp. v. Laitram Corp., 274 F.3d 1336, 1344 (Fed.
Cir. 2001). Thus, it is well settled that “the mere fact that the patent
drawings depict a particular embodiment of the patent does not operate to
limit the claims to that specific configuration.” Anchor Wall Sys. v.
Rockwood Retaining Walls, Inc., 340 F.3d 1298, 1306–07 (Fed. Cir. 2003)
Although we do not disagree with Appellant that claim 1 reads on the
Figure 12 embodiment of Appellant’s disclosure, we cannot agree with
Appellant that Figure 12 necessarily defines the outer reaches of the metes
and bounds of the invention. Id.
Next, we consider Appellant’s argument based on the context of the
claim. Appeal Br. 11; Reply Br. 1. In construing claims, we cannot look at
the ordinary meaning of a term in a vacuum. E.I. Du Pont De Nemours &
Company v. Unifrax I LLC, 921 F.3d 1060, 1068 (Fed. Cir. 2019). It is the
use of the words in the context of the written description and as customarily
used by those of skill in the relevant art that accurately reflects both the
‘ordinary’ and ‘customary’ meaning of the terms in the claims.” Ferguson
Beauregard/Logic Controls, Div. of Dover Res., Inc. v. Mega Sys., LLC, 350
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F.3d 1327, 1338 (Fed. Cir. 2003). Thus, construing the terms of a claim
without considering the context in which those terms appear is not
reasonable. Trivascular, Inc. v. Samuels, 812 F.3d 1056, 1062 (Fed.
Cir. 2016).
In the instant case, Appellant emphasizes the following claim
language as allegedly providing context to support Appellant’s assertion that
claim 1 is limited to a single top.
wherein top edge surface of the main plate body the rear flange
and the front flange are co-planar and combine to form a
continuous bearing surface across the entire top of the
foundation.
Claims App. claim 1; Appeal Br. 11. The problem with this position is that
it relies on claim language that the Examiner also considers to be indefinite.
Final Action 4. Claim 1 recites that a main plate body extends from “a” top
to “a” bottom of the foundation. Claims App. Thus, a phrase that Appellant
relies upon as providing context (“the entire top of the foundation”) simply
begs the question as to whether the claim is limited to a single top. If there
are two or more “tops,” referring to the “entire” top fails to provide the
needed clarity. Furthermore, the recited element “top edge surface” in
line 14 of the claim is preceded by neither an indefinite article (e.g., “a”) nor
a definite article (e.g., “the”). Once again, this leads to ambiguity and
uncertainty as to whether the claim refers to a single, solitary structure or
one of a plurality of structures.
During patent prosecution when claims can be amended, ambiguities
should be recognized, scope and breadth of language explored, and
clarification imposed. See In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989).
Section 112 places the burden of precise claim drafting on the applicant. See
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In re Morris, 127 F.3d 1048, 1056-57 (Fed. Cir. 1997). The patent drafter is
in the best position to resolve the ambiguity in the patent claims, and it is
highly desirable that patent examiners demand that applicants do so in
appropriate circumstances so that the patent can be amended during
prosecution rather than attempting to resolve the ambiguity in litigation.
Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1255 (Fed.
Cir. 2008) (cited with approval in Nautilus, 134 S.Ct. at 2129). Here, the
interests of Appellant and the general public would have been better served
had Appellant engaged the Examiner in a constructive dialog rather than
appealing to the Board. McAward, supra.; see also Predicate Logic, Inc. v.
Distributive Software, Inc., 544 F.3d 1298, 1300 (Fed. Cir. 2008)
(explaining that rigorous application of the indefiniteness statute serves an
important public notice function).
Having considered the competing positions of the Examiner and
Appellant, it is our opinion that the duplicative recitals of “a top” renders the
scope of the claim sufficiently vague and uncertain that the best course of
action is to sustain the Examiner’s rejection. McAward, supra.
Rectangular portion
The main body of Appellant’s foundation has five sides. See Fig. 1A.
The foundation is designed to be inserted in a ground surface below
grade 12. Id. ¶ 39. The portion of the main body that is visible above
grade 12 is shaped like a rectangle. Id. Thus, the rectangular portion
limitation, in and of itself, does not render claim 1 indefinite. See Morris,
127 F.3d at 1056 (explaining that a slice of pie can be considered a ‘portion
of the pie).
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Entire – top of the foundation
In view of our previous determination that duplicative recitals of “a
top of the foundation” renders the claim indefinite, we agree with the
Examiner that Appellant’s recitation of “the entire top of the foundation”
renders the claim indefinite because, if there is more than one top, it is
unclear which “top” is referred to in “the entire top” recital. Moreover, the
Examiner is correct in determining that “the entire top” recital lacks
antecedent basis. Final Action 4 (“the claim does not previously define an
entire top of the foundation”).
Top edge surface
We agree with the Examiner that Appellant’s recitation of “top edge
surface,” which is preceded by neither an indefinite or definite article,
renders the claim indefinite for lack of antecedent basis. Final Action 4.
Clarification of this claim term should be imposed. Zletz, 893 F.2d at 321.
In view of the foregoing, we sustain the Examiner’s Section 112
indefiniteness rejection of claim 1.
Claim 19
Claim 19 is an independent claim that contains claim language
reciting “a top of the foundation.” Claims App. Claim 19 also recites “top
edge surface” without a preceding definite or indefinite article. Id. We
sustain the Examiner’s Section 112 indefiniteness of claim 19 for essentially
the same reasons discussed above in connection with similar claim language
in claim 1.
Claim 21
Claim 21 is an independent claim that contains claim language
reciting “a top of the foundation.” Claims App. We sustain the Examiner’s
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Section 112 indefiniteness of claim 21 for essentially the same reasons
discussed above in connection with similar claim language in claim 1.
Claims 2–10, 20, and 22–25
These claims depend, directly or indirectly, from one of claims 1, 19,
or 21. Claims App. As such, these claims are infected with the same
infirmities identified above with respect to claims 1, 19, and/or 21. These
claims fall with the independent claims from which they depend.
Claim Construction for use in
the Prior Art Rejections
For purposes of analyzing the art rejections below, we adopt
Appellant’s constructions of the terms of claim 1 discussed above in
connection with the indefiniteness rejection, as best understood. We do this
solely for the purpose of reaching the art rejections and in no way should be
construed as departing from our previous determination that claim 1 is
otherwise indefinite.
Anticipation of Claims 1 and 2
by Stuart
Appellant argues claims 1 and 2 together. Appeal Br. 14–18. We
select claim 1 as representative. See 37 C.F.R. § 41.37(c)(1)(iv).
For a prior art reference to anticipate a claim, it must disclose all of
the limitations of the claim, arranged or combined in the same way as in the
claim. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1370 (Fed.
Cir. 2008). Determining whether claims are anticipated involves a two-step
analysis. In re Montgomery, 677 F.3d 1375, 1379 (Fed. Cir. 2012). The
first step involves construction of the claims of the patent at issue. Id. The
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second step of an anticipation analysis involves comparing the claims to
prior art. Id.
Appellant argues that there are two patentable differences between
Stuart and the claimed invention. Appeal Br. 15. The first such alleged
difference is with respect to the “continuous bearing surface” limitation of
claim 1. Id. The second alleged difference relates to the shape of the front
and rear flanges. Id. at 16.
Continuous Bearing Surface
Appellant argues that Stuart fails to disclose a top edge surface in the
form of a continuous bearing surface as claimed. Id. 15. Appellant argues
that Stuart discloses a cutout that disrupts the top edge surface from being a
continuous bearing surface. Id. Appellant argues that the Figure 5 and 6
embodiment of Stuart contains structure above the top edge surface that
disrupts the continuity thereof. Id.
In response, the Examiner states that the cutout shown in Figures 1–4
of Stuart is irrelevant as the rejection does not rely on such embodiment. Id.
With respect to the Figure 5 and 6 embodiment, the Examiner notes that
Appellant’s claim includes a “comprising” transition that does not prevent
the additional structure of Stuart element 25 being present in order to satisfy
the claim. Ans. 15.
In reply, Appellant argues that Stuart teaches away from the claimed
invention. Reply Br. 8. This argument is unpersuasive as “teaching away”
is not relevant to an anticipation analysis. Krippelz v. Ford Motor Co., 667
F.3d 1261 (Fed. Cir. 2012). It only relates to an obviousness analysis. Id.
Stuart is directed to a post anchor that includes a holder to receive and
hold a post. Stuart, Abstract. Stuart’s post anchor 10 comprises holder 20
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and ground engaging member 30. Id. ¶¶ 42–52. Ground engaging
member 30 includes a central web 31, a first flange 32, and a second
flange 33. Id. ¶ 44. First flange 32 is disposed on the side opposite central
web 31 of second flange 33. Id. ¶ 45. In the Figure 5 and 6 embodiment,
upright members 25 are welded to ground engaging member 30. Id. ¶ 49. In
the Figure 7 and 8 embodiment, a single upright member 27 is welded to
ground engaging member 30. Id. ¶ 49. In the Figure 9 and 10 embodiment,
post support 28 is welded to ground engaging member 30. Id. ¶ 51.
Figures 5 through 10 depict various views of ground engaging
member 30. Id. Figs. 5–10. The top edge surface of ground engaging
member 30 appears to form a continuous bearing surface. Id. The
Examiner’s finding that Stuart discloses a metal plate foundation with a top
edge surface that forms a continuous bearing surface across the top of the
foundation is supported a preponderance of the evidence. The fact that
Stuart’s ground engaging member 30 may have additional structures
attached to it, such as by welding, does not detract from the fact that
member 30 meets the claim limitation. In that regard, we note that both
Stuart and the instant invention contemplate that additional structures will be
attached to their respective ground engaging member/foundation. See Stuart
¶ 42 (the post may be used to carry signage); Appellant’s Spec. ¶ 55
(attachment to the structure 100 to be supported).
Shape of the Flanges
Appellant argues that the instant application features front and rear
flanges that include a “rectangular portion.” Appeal Br. 16. Appellant
argues that Stuart’s flanges are triangular in shape. Id.
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In response, the Examiner does not deny that the elevation side profile
of Stuart’s flanges is triangular as argued by Appellant. See generally Ans.
However, the Examiner finds that the cross-sectional profile of Stuart’s
flanges, when viewed from above, are rectangular. Id. at 16.
In reply, Appellant accuses the Examiner of “playing games” with the
shape limitation by referring to a top view cross-section profile of the
flanges in Stuart instead of the side view profile. Reply Br. 9. Appellant
argues that the rectangular shape limitation applies to the side view “at the
top” of the flanges instead of “on the top.” Id. at 10.
Appellant’s argument is not persuasive. The claimed foundation is
described in the Specification and depicted in the accompanying drawings as
a three-dimensional object. See generally Spec.; Figs. 1–12. Figure 5 is a
cross-sectional view of the foundation support. Spec. ¶ 25. Figure 6 is a top
plan view of the foundation support. Id. ¶ 26. The Specification teaches
that flat plate 14, the cross-section of which is depicted in Figure 5, may
vary in thicknesses. Id. ¶ 43. Although the Specification is silent as to the
thickness of the main body and flanges of the Figure 12 embodiment, a
person of ordinary skill in the art would understand that such structures also
exhibit a “thickness.”
The claim language merely requires a flange that extends from a top
of the foundation and includes a “rectangular portion” – “at the top of the
foundation.” Claims App. There is no requirement in the claim that such
portion be viewed from any particular angle or direction. A patent applicant
is entitled to the full breadth of claims scope supported by the words of the
claims and the written description. TI Group Automotive Systems, Inc. v.
VDO North America, LLC, 375 F.3d 1126, 1138 (Fed. Cir. 2004). The
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Examiner can hardly be blamed for “playing games” when the claim
language, as drafted by Appellant, literally reads on the prior art. See
Morris, 127 F.3d at 1056–57 (explaining that the burden of precise claim
drafting is on Appellant).
In view of the foregoing, we sustain the Examiner’s anticipation
rejection of claims 1 and 2.
Unpatentability of Claims 3 and 4
over Stuart
Appellant argues claims 3 and 4 together. Appeal Br. 18–20. We
select claim 3 as representative. 37 C.F.R. § 41.37(c)(1)(iv).
Claim 3 depends directly from claim 2 and indirectly from claim 1
and adds the limitation: “wherein the rear flange and the front flange extend
substantially perpendicular to the main plate body.” Claims App.
Appellant argues that the embodiment of Stuart relied on by the
Examiner to reject claim 1 fails to disclose the limitation of claim 3. Appeal
Br. 18–21.
In response, the Examiner finds that Stuart allows for minor changes,
such as orientation of the flanges. Ans. 16 (citing Stuart ¶ 56). In so doing,
the Examiner considers “the relatively low complexity and skill level
required to adjust the position of the flanges to be perpendicular as shown in
Stuart's Figures 11–12 instead of the positon shown in Stuart's Figure 5.” Id.
at 16–17.
In reply, Appellant argues that the Examiner’s position is “wholly
unsupported by a reasonable view of the prior art.” Reply Br. 12. However,
this argument finds no support in the record before us. Stuart expressly
discloses that the angle formed between the flanges and the central web may
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be “acute to obtuse.” Stuart ¶ 20. Thus, the disclosed range necessarily
includes a perpendicular angle. Id. Stuart’s drawings depict several
embodiments of a post anchor. Stuart, Figs. 1–12. In some of the
embodiments depicted in the drawings, the flanges are perpendicular to the
main body and, therefore, parallel to each other. Id. Figs 1–4, 11–12. In
other embodiments, they are not. Id. Figs. 5–9. We agree with the
Examiner that a person of ordinary skill in the art would have found it
obvious to practice the invention of Stuart using perpendicular flanges.
We sustain the Examiner’s obviousness rejection of claims 3 and 4.
Unpatentability of Claims 5 and 6
over Stuart and Hughes
Appellant argues claims 5 and 6 together. Appeal Br. 20. We select
claim 5 as representative. 37 C.F.R. § 41.37(c)(1)(iv).
Claim 5 depends directly from claim 4 and indirectly from claim 1
and adds the limitation: “wherein the one-piece metal plate foundation is
galvanized.” Claims App. The Examiner relies on Hughes as teaching a
galvanized ground stake. Final Action 7. According to the Examiner, a
person of ordinary skill in the art would have done this to prevent rust. Final
Action 7.
Appellant argues that Hughes is directed to a sun protection assembly.
Appeal Br. 20. To Appellant, “it is not clear” why one of ordinary skill in
the art would look to Hughes to provide a galvanized stake for use with a
post anchor. Id.
In response, the Examiner explains that Hughes is analogous art to the
claimed invention as Hughes’ sun assembly is in Appellant’s field of
endeavor and, in any event, is reasonably pertinent to the particular problem
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with which Appellant is concerned, namely, inserting a foundation
component into the ground to prevent movement. Ans. 17.
In reply, Appellant argues that the Examiner failed to explain why one
of ordinary skill in the art working on a post anchor would look to a sun
protection assembly of a secondary reference such as Hughes. Reply Br. 13.
Appellant’s arguments are not persuasive. Hughes discloses a sun
protection assembly comprising a frame, a screen, and legs. Hughes,
Abstract. Ground stake 56, which comprises a pointed end, is attached to
the legs by means of screw fasteners. Id. col. 3, ll. 23–32. Regardless of the
structure that is assembled above such foundation stakes, Hughes teaches
that ground stakes 56 are made of galvanized steel. Id. col. 3, ll. 23–24.
Galvanizing steel is well known to prevent rust. The Examiner finds that a
person of ordinary skill would have used galvanized steel on Stuart’s post-
anchor to prevent rust. Final Action 7. This reasoning is adequate to
support the rejection and fully answers Appellant’s question as to “why”
someone would use galvanized steel. See In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006) (requiring an obviousness conclusion to be based on explicit
articulated reasoning with rational underpinning) cited with approval in KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Contrary to Appellant’s
position, we view Hughes as merely exemplary of a wide body of literature
that teaches using galvanized steel. In that regard, it is well settled that an
artisan is presumed to know something about the art apart from what the
references disclose. See In re Jacoby, 309 F.2d 513, 516 (CCPA 1962).
Appellant’s argument suggesting that a person of ordinary skill in the
art would not have looked to a ground foundation stake for a sun protection
device is without merit. Appellant’s Specification states that: “The present
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invention relates to various flat-plate supports that provide a foundation for
various ground supported structures.” Spec. ¶ 6 (emphasis added). Thus,
both Stuart and the instant invention contemplate that additional structures
will attached to their respective ground engaging member/foundation. See
Stuart ¶ 42 (the post may be used to carry signage); Appellant’s Spec. ¶ 55
(attachment to the structure 100 to be supported). Appellant presents neither
evidence nor persuasive technical reasoning that Hughes’ sun screen falls
outside of the scope of “various ground supported structures” contemplated
in paragraph 6 of Appellant’s Specification. Moreover, the mere fact that
the specific structure that is built upon Hughes’ stakes is a sun protection
screen, does not negate the fact that Hughes teaches the use of galvanized
foundation stakes to support a structure and, as such, falls squarely within
Appellant’s field of endeavor.
Thus, we are not apprised of error such that we sustain the Examiner’s
obviousness rejection of claims 5 and 6.
Unpatentability of Claims 7–10, and 23
over Stuart, Hughes, and Johnson
Appellants argue claims 7–10 as a group and offers no separate
arguments for the patentability of claim 23. Appeal Br. 20–23. We select
claim 7 as representative. 37 C.F.R. § 41.37(c)(1)(iv).
Claim 7 depends directly from claim 6 and indirectly from claim 1
and adds the limitation: “further including at least one mounting hole at the
top of the one-piece metal plate foundation configured for attachment to a
structure to be supported.” Claims App. The Examiner relies on Johnson as
teaching mounting holes. Final Action 7–8. Appellant’s argument in
traverse is reproduced below.
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In reality the Johnson patent teaches attaching foundation
flanges to a sign post structure. The Johnson patent teaches
away from the one piece foundation of the present claimed
invention when viewed as a whole. The present invention
intends to form a foundation with integral flanges and this is
opposite what the Johnson patent is directed toward.
Furthermore there is no need to use this teaching of coupling
flanges to the foundation post of the sign in the primary
reference unless the examiner intends to add additional flanges
thereto. The examiner is merely attempting to point out similar
structure somewhere in the applied prior art and reconstruct the
present claimed invention without a reasonable teaching or
suggestion to do so. Finally the primary Stuart reference has a
distinctly different separate coupling structure for coupling the
foundation to the post and changing this attachment would
change the fundamental operation of the foundation disclosed
therein.
Appeal Br. 22.
In response, the Examiner states that the Johnson reference was
merely applied to teach a hole for receiving a fastener to mount the
components of Stuart as an alternative to welding. Ans. 17–18. According
to the Examiner, using fasteners instead of welding is well within the level
of ordinary skill in the art. Id. at 18.
In reply, Appellant argues that replacing Stuart’s welds with mounting
holes does not yield the claimed invention. Reply Br. 14.
There are many ways to attach components together in an assembly.
One way is with welding. Another way is to use holes with fasteners such as
screws or bolts. Appellant’s argument that modifying Stuart’s assembly to
use holes and fasteners instead of welding is not persuasive. “It is well-
established that a determination of obviousness based on teachings from
multiple references does not require an actual, physical substitution of
elements.” In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012). This
Appeal 2019-001041
Application 15/242,723
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follows from the well-established principle that the obviousness inquiry does
not ask “whether the references could be physically combined but whether
the claimed inventions are rendered obvious by the teachings of the prior art
as a whole.” In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en banc).
The Examiner’s position that a person of ordinary skill in the art
would have found it obvious to modify Stuart to use holes and fasteners is
supported a preponderance of the evidence and the Examiner’s conclusion of
obviousness based on the combined teachings of the prior art is well
founded. We sustain the Examiner’s obviousness rejection of claims 7–10
and 23 over Stuart, Hughes, and Johnson.
Unpatentability of Claims 19–22, 24, and 25
over Stuart and Johnson
Appellant argues claims 19–22, 24, and 25 as a group. Appeal Br. 23.
We select claim 19 as representative. 37 C.F.R. § 41.37(c)(1)(iv). Claim 19
is an independent claim that is substantially similar in scope to claim 1,
except for the angular orientation of the flanges and the use of mounting
holes. Final Action 9–10. The Examiner relies on Johnson as teaching
mounting holes. Id. at 10.
In traversing the rejection, Appellant relies on many of the same
arguments that we considered and found unpersuasive with respect to
claim 1 and find equally unpersuasive here. Appeal Br. 23. Appellant also
argues against the combinability of Johnson with Stuart. Id. Johnson is
relied on as teaching holes for use with fasteners. Our discussion on this
issue with respect to claim 7 above applies with equal force here.
We sustain the Examiner’s obviousness rejection of claims 19–22, 24,
and 25 over Stuart and Johnson.
Appeal 2019-001041
Application 15/242,723
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DECISION
The decision of the Examiner to reject claims 1–10 and 19–25 as
indefinite under 35 U.S.C. § 112(b) is affirmed.
The decision of the Examiner to reject claims 1 and 2 as anticipated
by the prior art is affirmed.
The decision of the Examiner to reject claims 3–10 and 19–25 as
obvious over the prior art is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED